Poland joins forces with the WIPO to mediate trade mark oppositions

The Patent Office of Poland (PPO) and the World Intellectual Property Organisation Arbitration and Mediations Centre (WIPO) are collaborating to raise awareness of Alternative Dispute Resolution (ADR) to resolve IP and technology disputes in Poland.

PPO and WIPO have established a common dispute resolution procedure to facilitate mediation in disputes regarding objections to trade mark applications pending before the PPO. This was concluded in the Memorandum of Understanding of 15 April 2018.

Trade mark mediation proceedings offer several advantages for the resolution of intellectual property disputes. Specifically, mediation is an attractive option for parties who:

• place a premium on the preservation or enhancement of their relationship
• seek to maintain control over the dispute settlement process, or
• value confidentiality or want to reach a speedy settlement without damage to their reputations.

ADR can increase the parties' control over the dispute resolution process.

Trade mark mediation services provided by WIPO in proceedings before the PPO

If a third party objects to a trade mark application filed with the PPO, the PPO informs the parties about the possibility of amicable settlement of the dispute. During this period, parties request mediation at the WIPO Arbitration and Mediation Centre.

Mediation begins when a written request for mediation in the proceedings before the PPO is submitted. The application must be completed and signed by the applicant and the opponent.

Submission of a dispute to WIPO mediation

List of WIPO/PPO mediators

The effectiveness of the mediation depends largely on the knowledge and competence of the mediator. Therefore, WIPO maintains an open register of mediators.

Mediators from Poland who possess an extensive expertise in the field of IP law, including areas such as trade marks, patents and copyrights, are among the list. The parties of disputes pending before the PPO may appoint a mediator from the list of mediators of WIPO/PPO or also nominate people outside the proposed list.

The parties are obliged to inform the PPO about the outcome of the mediation procedure before the expiry of the deadline set out in the Act. In the event of an amicable settlement, the parties may submit a request to terminate the complaint procedure.

When a settlement has been reached during a 2-month period (or alternatively a six month period), the parties shall be entitled to a refund of up to 50% of the objection fee, adjudicated by the PPO. If the parties fail to resolve the dispute within six months but want to continue mediation, proceedings pending at the PPO must be suspended at the joint request of both parties.

Fees and costs of the procedure

WIPO places particular emphasis on minimising the time and costs of the proceedings it administers. The administrative fee, mediator fee and other costs related to mediation are shared equally between the parties.

Admistrative fee for WIPO:

• €50 from the party of proceedings.

Mediator's remuneration:

• €100 from the party to proceedings (for the first four hours of mediator's work – preparation and conduct of mediation).
• Each subsequent hour of mediator's work: €50 on the side of proceedings.

Poland is one of the first countries in the CEE market which offers this kind of mediation options for disputes.

The ADR mediation option is particularly beneficial for IP related disputes between parties from different jurisdictions. If well managed, ADR can save time and money. Additionally, its consensual nature often results in a less adversarial process, allowing the parties to begin, continue or improve business relationships.

It appears that mediation may increase the number of trade marks in Poland, in particular coexistence of similar trade marks. Joint WIPO/PPO efforts reflect that Poland is an important IP forum and leads the CEE regions in IP-related disputes.

Useful links

• WIPO's ADR webpage
• Alternative Dispute Resolution (ADR) Options for Intellectual Property and Technology Disputes information sheet